Connecting with WIPO

adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Football Association Premier League Limited v. IT-NORIND, Bhutani

Case No. D2012-0914

1. The Parties

The Complainant is The Football Association Premier League Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by the law firm DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is IT-NORIND, Bhutani of Dhamtari, Chattisgarh, India.

2. The Domain Name and Registrar

The disputed domain name <premierleagueshop.com> is registered with GoDaddy.com, LLC. The disputed domain name was created in November 2003.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On April 30, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 30, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 3, 2012.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.

The Center appointed Richard G. Lyon as the sole panelist in this matter on May 31, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the governing body for the United Kingdom association football competition known as the “Premier League”. The Complainant’s members, the football clubs that make up the League, include such famous clubs as Arsenal London and Manchester United. Formed in 1992, the League and its member clubs are well known in the world of sport for providing top-flight football.

In 1999 the Complainant registered PREMIER LEAGUE as a trademark in the United Kingdom in a number of classes including football tickets. The Complainant maintains an active Internet presence, and since November 2011 has sold many tickets to its members’ matches through its own website.

The Respondent registered the disputed domain name in November 2003. At some point in 2004, according to evidence submitted with the Complaint and verified by the Panel on the Wayback Machine at <www.archive.org>, the disputed domain name resolved to a registrar-generated parking page, with block advertisements promoting the registrar’s domain-related services. The banner ad reads “Coming Soon! This Web page is parked free, courtesy of GoDaddy.com.”

Recently however the content at the disputed domain name has changed, to a page entitled “Premier League,” followed by links, each featuring the name and insignia of one of the Complainant’s member clubs. From each link an Internet user is redirected to a site at which tickets to that club’s matches may be purchased. The site provides a United Kingdom telephone number and includes a box entitled “Why Buy Tickets From Us?”

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain name is confusingly similar to the Complainant’s registered PREMIER LEAGUE mark. Addition of a common word, in this case “shop,” does not obviate confusion with the mark.

Neither the Complainant nor any of its member clubs has authorized the Respondent to use its marks or to sell tickets to its members’ matches.

Noting that the unauthorized sale of tickets is a criminal offense in the United Kingdom, the Complainant asserts that the Respondent’s current use is evidence of bad faith under paragraph 4(a)(iv) of the Policy, as it gives the false impression of affiliation with or sponsorship by the Complainant. The Complainant’s contentions on registration in bad faith are discussed in Section 6.C. below.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In this Policy proceeding the Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

As in any default case under the Policy and unlike civil litigation in the most jurisdictions, the Respondent’s failure to reply to the Complaint does not constitute an admission of any factual matter pleaded in the Complaint or result automatically in a transfer of the disputed domain name. The Complainant must prove up each Policy element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6, Consensus View.

A. Identical or Confusingly Similar

The Complainant has established this Policy element with proof of its registered trademark for PREMIER LEAGUE. As the Complainant argues, the addition of a common word in the disputed domain name does not avoid confusing similarity.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) the Complainant must prove a negative. This is normally accomplished by “mak[ing] out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1, Consensus View.

The Complainant has made its prima facie case by showing that neither the Complainant nor any of its member clubs has authorized the Respondent to use the Complainant’s PREMIER LEAGUE mark or to sell match tickets. Nothing in the record suggests that the Respondent has been commonly known by the disputed domain name except by reason of the recent unauthorized ticket activities, something that does not under the Policy create a right or legitimate interest. The Respondent has come forward with no evidence of a right or legitimate interest. Thus the Panel finds the Complainant has carried its evidentiary burden under paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

As the Complainant argues, the Respondent’s recent use of the disputed domain name for unauthorized ticket sales falls foursquare within the example of evidence of bad faith in paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The fact that unauthorized ticket sales is a crime in the jurisdiction in which the mark is registered reinforces a finding of bad faith use.

The Complainant must separately prove registration in bad faith, see, e.g., Mile, Inc. v. Michael Burg,
WIPO Case No. D2010-2011. Here the Complainant’s argument is not clearly articulated in the Complaint and its evidence rather limited. The Complainant offers a string of citations to cases in which panels inferred registration in bad faith primarily from the distinctiveness and renown of the trademarks at issue (Harrods Limited v. Walter Wieczorek,WIPO Case No. DTV2001-0024; Action S.A. v. Robert Gozdowski,
WIPO Case No. D2008-0028; Xerox Corp. v. Stonybrook Investments, Ltd,
WIPO Case No. D2001-0380; AT&T Corp. v. Fred Rice,
WIPO Case No. D2000-1276; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163). In each of the cases cited, however, the panel found bad faith use shortly after registration or typosquatting, either of which supports an inference of knowledge of the complainant’s trademark at the time of registration and an intent at that time to profit from the mark’s renown. These two matters are normally what must be shown to establish registration in bad faith. See, e.g., Public Service Electric & Gas Company v. Definitive Sports Management LLC,
WIPO Case No. D2012-0617 (“For the Panel to make the necessary inferences Complainant must put forward evidence from which the Panel finds it more likely than not that Respondent registered and used the disputed domain name with knowledge of Complainant’s mark and an intent (“targeting”) to take advantage of the fame of the mark for its own commercial purposes.” (citation omitted)). Here the mark at issue is not particularly distinctive, and the first clear evidence of cybersquatting occurred nine years after the Respondent’s initial registration.1 Does the record support the Panel’s inference of actual knowledge and targeting at the date of registration? The Panel believes that it does.

While the Panel cannot say that is “not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate“ (Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003), there is no evidence to support any other conclusion. Though consisting of two everyday words and being arguably descriptive of the Complainant’s services, nothing in the record suggests that the Respondent selected the disputed domain name for its “generic” value. There is no evidence, for example, that the Respondent collected domain names consisting of common words, or that it was chosen for use in connection with another organization of the same name as the Complainant. There is no evidence of any use at all by the Respondent,2 “generic” or otherwise, until the Respondent began to compete with the Complainant.

To be sure, the Policy does not require the Respondent to present any proof; the Complainant bears the evidentiary burden. But the present record is not without evidence, albeit sketchy, of the Respondent’s knowledge and targeting of the Complainant’s mark. The mark at issue, as the Complainant has demonstrated, even if not trademark-famous is well known around the football world. This is not a case such as Public Service Electric & Gas Company v. Definitive Sports Management LLC, supra, or The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS,
WIPO Case No. DAM2010-0001, two default cases in which the panel found an alternative reason for registration “equally likely.”

The worldwide recognition of the Complainant’s mark coupled with the uncontested fact that the only use made actively by the Respondent was clear cybersquatting, brings the case within the warehousing doctrine of the Telstra case, supra, and its counterpart in WIPO Overview 2.0, paragraph 3.2, Consensus View:

“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”

The Complainant need not prove this or any Policy element to an absolute certainty; as noted the applicable burden is a preponderance of the evidence. Applying the Telstra approach, the Panel finds that the Complainant has carried its burden of proof under this Policy head, in showing that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <premierleagueshop.com> be transferred to the Complainant.

2 In this case the Panel does not attribute the original pay-per-click pages to the Respondent, as those pages were clearly generated by the registrar and did not contain content related to the Complainant, the Complainant’s competitors, or the Complainant’s line of business. See Natura Cosméticos S/A., Indústria e Comércio de Cosméticos Natura Ltda. v. Jarno Vastamaki,WIPO Case No. DTV2012-0007 (“In the present proceeding, Respondent has used a free parking page offered by its Registrar in association with a ‘nonspecific’ list of products and services that bear no evident relationship to Complainant or its products. The Panel is unwilling to draw from these facts an inference that Respondent was attempting to take unfair advantage of Complainant and its trademark for commercial gain.”) The Respondent’s long non-use does bear upon bad faith for the reasons given in the accompanying text.